Issues concerning Remedies for Preemptive Trademark Registration

In case a foreign trademark which has not been registered in China is preemptively registered by someone else, the current Chinese Trademark Law provides solution to cope with this issue premises that certain conditions are fulfilled. This article is aimed at discussing about remedies for the preemptively registration of trademark.

Based on the status of the preemptively registered mark, there are two different administrative remedy processes for the original mark owner (“the Owner”):

1) Opposition

In accordance with Article 35.1 of the Trademark Law, the Owner may file an opposition against the preemptively registered mark on the condition that such mark has undergone preliminary examination and approval

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and has been publicly announced. The Trademark Office (“the CTO”) will hear the statements of the facts and reasons made by the opponent and the opposed party, and shall, after the investigation and verification, make a decision as to whether the registration is to be approved for registration and notify, in writing, the opponent and opposed party of such decision within twelve (12) months from the date when the period of public announcement expires.

It is important to note that an opposition against a preemptively registered mark must be raised within three months after it is preliminarily approved and published. The said three-month can neither be suspended nor extended. In case no opposition is raised within the said period, the preemptively registration mark will be officially registered and granted legal protection. Thus, a monthly (or even weekly, if necessary) trademark monitor is suggested in order to raise opposition timely.

2) Declaration of Invalidity

If the preemptively registration is already approved for registration, in accordance with Article 45.1 & 2 of the Trademark Law, the Mark Owner may file an application and request the Trademark Review and Adjudication Board (“the TRAB”) to declare invalidity of the said mark. Unless the trademark of the Mark Owner has reached well-known status in China, such invalidity declaration against the preemptively registration must be filed within five years from the day on which the preemptively registered trademark is registered.

It needs to be pointed out that, in case the Owner’s application to the TRAB for remedy is failed, the Owner can resort to judicial procedure by filing a lawsuit against the TRAB’s decision to the Beijing IP Court within 30 days after receipt the TRAB’s decision.

Legal Ground for the Remedy

No matter which process mentioned above is adopted, the Mark Owner can file either application in accordance with Article 32 of the Trademark Law, an application for the registration of a trademark shall not create any prejudice to the prior right of another person, nor unfair means be used to preemptively register the trademark of some reputation another person has used. The second half of the said article is mainly focus on the preemptively registration of an unregistered mark whereas the first half thereof is focus on preemptively registration of someone’s prior rights, such as trade name, copyright, design patent, right of name and right of image.

By using the preemptively registration of unregistered mark as an example, in accordance with Trademark Review and Examination Standard (“the Standard”) adopted by the CTO and TRAB, the elements to establish a case, whether an opposition or a declaration of invalidity, for remedy include:1) The said unregistered mark has been used and retained certain influence prior to the application date of the preemptively registration;2) The preemptively registration is identical to or similar with the said unregistered mark;3) The goods/services designated by the preemptively registration is the same as or similar with those of the unregistered mark in principle;4) The applicant of the preemptively registration is in bad faith.

Preparation for the Remedy

Under the circumstance, the elements 1) & 4) mentioned above will be crucial from the point view of evidence collection. In accordance with the Standard, “a mark that has been used and retained certain influence” means an unregistered mark that has been used in China and acknowledged by relevant public within certain geological areas. Factors that showing influence of the said mark may include but not limited to a) acknowledgment of the mark by the relevant public; b) time and scope of geological areas the mark has been used; c) time, manner, degree and scope of geological area of advertisement of the mark etc. Accordingly, evidence materials as followings may be used to prove the use and influence of the unregistered mark:

 Contract, invoice, purchase order, bank bills, and import/export credential relating to the goods/services designated by the said unregistered mark; Materials relating to sales areas, channels and methods of the goods/services designated by the said unregistered mark; Media advertisements, reports and other promotion materials involving the said mark in/on radio, film, TV, newspapers, magazine, network, outdoor etc; Materials relating to attending fairs, exhibitions of the goods/services designated by the said unregistered mark; Materials relating to time of creation and continuous use of the said mark; Awards granted to the said mark; Other materials that proving the influence.

It must be pointed out that such materials must show the use and influence of the said mark in the Chinese market. Merely showing the use and influence outside China will not be supported by the CTO, TRAB or in court. Besides, an effective piece of evidence material should also display the mark, goods/services, date of use and its user. For instance, in the first instance case concerning the preemptively registration of the “陆虎” case, even though “陆虎” which had been used as the Chinese translation for the “LAND ROVER”, was not registered by the Land Rover as a trademark, the first instance court held that the “陆虎” as the “LAND ROVER”’s translation had been widely recognized by the Chinese relevant public and established one-on-one relation with the brand owner based on 41 news reports or auto magazine articles in China. The third party of the case (the preemptive registrant of the said mark) as an auto manufacturer must have known the use and fame of the “陆虎”. Thus, the registration of the said mark by the third party was not justified.

As to the determining factors of bad faith (the element 4 abovementioned), it may include factors, such as previous trade or cooperation relationship existed between the applicant of the preemptively registration and the Mark Owner, disputes between the said two parties which makes the applicant of the preemptively registration acknowledge the said unregistered mark, and strong distinctiveness of the said unregistered mark etc.

It is worth of noticing that the “mark distinctiveness” is also listed as one of determining factors of bad faith according to the Standard. The reason for that might be because a mark with distinctive design, whether it is composed of words, graphics or combinations thereof, does not only easily distinguish itself from other marks, but is also more easily to establish a special relation with its owner by the relevant public due to its uniqueness. For example, in case of a word mark that is composed of a dictionary word or common usage, such word mark is usually less distinctive than a unique one (e.g. a created word or a word mark with distinct stylized font etc.), since it might be more probably that people will be inclined to refer to the word/usage’s original meaning other than the goods/services designated by the word mark when they see the word/usage. It means that a less distinctive mark is harder for the relevant public to establish a one-on-one relation between the mark and the owner, and it will raise the evidence standard to a higher level in order to prove such mark’s influence in the relevant public in a preemptively registration case.

On the other hand, a prior existed mark with distinct character is not only much easier to be identified and establish one-on-one relation with its owner by the relevant public due to its uniqueness, such distinctiveness itself is a good proof to display the copying/free-riding intention of the preemptively registrant, unless it can provide a justified explanation with supporting evidence for such “coincidence”. Therefore, with respect to the marks that have very distinct characters, e.g. stylized font, original design, unique spelling etc., it may consider to use the distinctiveness of the mark as an argument to prove the bad faith element in a preemptively registration case. In this case, evidence, such as design ideas, brand stories etc, will be helpful for supporting the “bad faith” argument.

Conclusion

In conclusion, the best way to prevent an unwanted preemptively registration is actually to register your mark timely in the countries that your goods/services are sold or intended to be sold, and to make periodically trademark monitoring in order to timely discover unwelcome application/registration before it is too late. In case it has already been preemptively registered or in the process of registration, the Owner still can resort to the remedy processes provided in the Chinese Trademark Law. Under the circumstance, a successful remedy will mainly depend on adequacy of the supporting evidence and the statute of limitation mentioned above.

Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.